Respondent is Screen Actors Modesl [sic] International, Inc. (SAMI). There
has been communication on behalf of the Respondent by Darryl Lee. Respondent,
located at 1109 Kalihiwai Place, Honolulu, Hawaii 96825, USA, is not represented
by counsel.

2. The Domain Name and Registrar

The domain name in dispute is <sami.com>. The registrar is Network Solutions,
Inc., located at 505 Huntmar Park Drive, Herndon, Virginia 20170-5139, USA.

3. Procedural History

Complainant submitted its complaint to the WIPO Arbitration and Mediation Center
(the "Center") by e-mail on June 13, 2001, and by hard copy on June 15,
2001. The complaint requests that the Center apply the Uniform Domain Name Dispute
Resolution Policy (the "Policy" or the "UDRP"). The complaint was
filed in accordance with the requirements of both WIPOís Supplemental Rules
as well as the rules governing the Policy. In addition, the Complainant has
met all other requirements for the complaint to be adjudicated, including payment
of proper fees.

A verification request was sent to Network Solutions on June 18, 2001, asking
that it confirm receipt of the complaint, confirm that the domain name <sami.com>
is registered with it, and that the Respondent is the current registrant of
the domain name. The requested verification was provided on June 22, 2001. Thereafter,
by notice dated June 25, 2001, the Center advised Respondent that the administrative
proceeding had been commenced. The notification further advised Respondent than
an answer to the complaint was to be filed no later than July 14, 2001. The
notification was sent to Respondent by post, facsimile and e-mail, using the
contact details that had been provided. Respondent did not file a response within
the time required, nor did Respondent seek any extensions of time to file a
response. As such, Respondent was declared in default, and a notice advising
of this fact was sent on July 17, 2001.

Although Respondent did not submit a formal response to the complaint, it did
acknowledge that it had received the complaint by sending an e-mail to the Center
on July 17, 2001, asking the Center "What is this all about?"
The Center responded on July 19, 2001 by advising that a domain name dispute
had been filed concerning the domain name <sami.com>.

The Center appointed an Administrative Panel (the "Panel") on July 30, 2001,
and requested that a decision be forwarded by August 12, 2001.

4. Factual Background

Complainant is the owner of the federally registered service mark SAMI, registered
in the United States Patent and Trademark Office as Registration No. 1,831,771.
The registration was issued on April 19, 1994, and alleges use dating back to
March 3, 1989. Compl. Exh. 4. Complainant also owns a Community Trademark
for SAMI, Registration No. 00,134,1684, which was issued on January 19, 2001.
Compl. Exh. 5. The SAMI mark has been used on Complainantís webpage to promote,
sell and facilitate Complainantís services although Complainant does not indicate
when the webpage was first available.

On October 31, 1995, Respondent registered the domain name <sami.com>.
Compl. Exh. 1. Other than the registration of the domain name, there
is no indication that there has been any use of the domain name in connection
with offering any goods or services. On April 14, 2000, Complainantís counsel
sent an e-mail to Respondent asking if he was interested in selling the domain
name. Mr. Lee, on behalf of Respondent, advised that he would consider an offer.
The offer made by Complainant of $3,000 was rejected. Mr. Lee did not provide
a counter-proposal. Compl. Exh. 18. Thereafter, the domain name was
renewed and is now set to expire on November 1, 2001.

5. Partiesí Contentions

A. Complainant

Complainant argues that it has rights in the mark SAMI by virtue of its use
of the mark and registrations in the United States and the European community.

Complainant next argues that the domain name <sami.com> is confusingly
similar to the SAMI trademark.

With respect to whether Respondent has rights or legitimate interests in the
domain name, Complainant claims that Respondent is not commonly known as <sami.com>
since the Respondent ceased to exist five years ago. Complainant further alleges
that Respondent has no rights or legitimate interests in the domain name <sami.com>
because Respondent renewed the registration for the domain name <sami.com>
under the name Screen Actors and Models International, Inc. despite the fact
that this entity dissolved in 1996. In addition, Complainant contends that Respondent
lacks legitimate rights or interests in the domain name <sami.com> because
Respondent failed to take any steps to use the domain name in connection with
a bona fide offering of goods or services and renewed the name with the sole
intent of selling it for a profit.

On the issue of bad faith registration, Complainant relies primarily on the
acts surrounding the renewal of the domain name in 2000, arguing that because
the domain name was renewed in the name of an entity that Complainant alleges
no longer exists, such conduct constitutes registration of a domain name in
bad faith. Complainant also bases its argument of bad faith on the grounds that
its U.S. federal trademark registration put Respondent on constructive notice
of its rights in the SAMI mark prior to Respondentís registration. Additionally,
Complainant alleges that Respondent renewed the domain name after Complainant
approached Respondent seeking to purchase it. Complainant contends that Respondent
not only rejected Complainantís offer but counter-offered to sell it for $250,000.
This, Complainant argues, also shows bad faith. Finally, Complainant states
that bad faith use of the domain name can be found because the domain name has
not been used and the website corresponding to that domain name has been inactive.

B. Respondent

Respondent has not responded to the allegations in the complaint and, as such,
has not contested any of the facts and allegations made by the Complainant.
Respondent did submit an e-mail to the Center on July 19, 2001, which was after
the due date for a proper answer under the Centerís Order. Nevertheless, the
Panel will, and has, taken notice of the contents of that e-mail [1].
In his e-mail, Respondent admits that he had attempted to sell the domain name
and had listed it for an open bid. Respondent concludes his e-mail by stating
that he is available to "entertain all offers for a sale of my name."

6. Discussion and Findings

In order for Complainant to prevail in this matter and to obtain the requested
relief of a transfer of the domain name <sami.com>, Complainant must prove:

- that Complainant has rights in the mark SAMI;

- that the domain name is identical or confusingly similar to Complainantís
trademark or service mark;

- that the Respondent has no rights or legitimate interests in the domain name;
and

- That the domain name was registered and is being used in bad faith. See Policy
paragraph 4(a).

Even though there has been no response by Respondent, nevertheless, Complainant
maintains the burden of proving that of the elements required for the UDRP exist.
Ingram Micro Inc. v. Noton Inc., WIPO Case
No. D2001-0124.

Rights in the Mark

The uncontradicted evidence shows that Complainant is the owner of a United
States Federal Registration for the mark SAMI, Registration No. 1,831,771. The
mark was registered on April 19, 1994. The application was filed January 22,
1992. As a matter of U.S. trademark law, Complainant has established nationwide
priority of rights in the mark SAMI as of its filing date of 1992. Complainantís
registration is incontestable under U.S. law and therefore serves as conclusive
evidence of Complainantís exclusive right to use the mark SAMI for the goods
and services specified in the registration. The evidence further shows that
Complainant is the owner of a Community Trademark for SAMI, Registration No.
00,134,1684.

Given the existence of these registrations, Complainant has satisfied the first
element and has shown that it has rights in the mark SAMI.

Identical or Confusing Similarity

The domain name at issue copies in its entirety Complainantís trademark. Nothing
has been added to distinguish the domain name from Complainant. On its face,
it is evident that the domain name is identical to the mark SAMI in which the
Complainant has established rights. Credit Management Solutions, Inc. v.
Collex Resource Management, WIPO Case
No. D2000-0029.

Legitimate Rights or Interests

Under the Policy, legitimate interest in a domain name may be demonstrated
by showing that: (a) before any notice of the dispute Respondent used, or made
preparations to use, the domain name in connection with a bona fide offering
of goods or services; (b) Respondent has been commonly known by the domain name,
even if no trademark or service mark rights have been acquired; or (c) Respondent
is making legitimate, non-commercial and fair use of the domain name, without
intent for commercial gain or to misleadingly divert consumers or to tarnish
the trademarks at issue. Policy paragraph 4(c). By failing to file a response
in this action, Respondent has not demonstrated any legitimate rights or interests
in the domain name. In addition, the evidence provided by Complainant shows
that there is no use of the domain name by Respondent in connection with a bona
fide offering of goods or services or that the Respondent is making legitimate
common non-commercial or fair use of the domain name.

This leaves us with the question of whether Respondent has been commonly known
by the domain name. There is no dispute but that when the domain name was initially
registered in 1995, Respondent had an existing business called Screen Actors
Models International, Inc. Complainant contends that one year after the domain
name was registered, the Respondent dissolved. In support of this statement,
Complaint points to records of the Hawaii Secretary of State showing that the
companies Sami and Sami, Inc. have dissolved. Compl. Exh. 7. However, these
documents do not refer to Screen Actors Models International nor do the addresses
of the corporations listed on the documents correspond with Respondentís address.
Thus, there is no evidence that Respondent dissolved as a corporate entity.

The Policy refers to a respondent "having been" commonly known by
the domain name. It does not seem to require that Respondent be known by the
domain name at the time of the adjudication of the dispute but only at some
point in time. It is possible that Respondent, may have been known by the acronym
SAMI at the time it registered the domain name. However, it is not for the Panel
to guess. Because Respondent has not provided any evidence to show it was known
by the acronym SAMI and given the lack of use of the domain name, the Panel
finds that Complainant has met its burden with respect to paragraph 4(a)(ii)
of the Policy.

Registered and Used in Bad Faith

These elements of the Policy, embodied in paragraph 4(b), while often considered
together are separate inquiries. Complaint must show that "the registration
was undertaken in bad faith and that Respondent is continuing to act
in bad faith." Telstra Corp. Ltd. v. Nuclear Marshmallows,
WIPO Case No. D2000-0003; Kabushiki
Kaisha Toshiba v. Distribution Purchasing & Logistics Corp., WIPO
Case No. D2000-0464. Given the conclusion reached below, the issue of bad
faith use need not be addressed.

In arguing that the Respondent registered the domain name in bad faith, Complainant
relies on its trademark for SAMI which was issued prior to the registration
of the domain name <sami.com>. While Respondent is deemed to be on constructive
notice of Complainantís rights in the trademark SAMI as a matter of U.S. law,
there is no evidence that Respondent knew or should have known of the domain
name[2]. Indeed, no evidence has been presented
by Complainant to suggest that Respondent would know or would have reason to
know of Complainantís mark. Under these facts, constructive notice is not sufficient
evidence of bad faith registration. Complainant has put forth no evidence that
Respondent originally registered or acquired the domain name in bad faith primarily
for the purpose of selling it or for other purposes.

Complainant seems to recognize that the original registration of the domain
name was not in bad faith and thus concentrates its argument on the renewal
of the registration in November, 2000. This renewal, according to Complainant,
constitutes a new registration. Complainant cites no case for this position.
Complainant argues that changed circumstances can convert a registration originally
obtained in good faith to one registered in bad faith. Such a position finds
no support in WIPO precedent and, in fact, the cases hold to the contrary. In
Smart Design LLC v. Carolyn Hughes, WIPO Case
No. D2000-0993, the complainant, like the Complainant here, did not have
strong, if any, evidence that the Respondent initially registered the domain
name in bad faith. Nevertheless, the complainant, like the Complainant here,
contended that it was entitled to a transfer of the domain name because the
renewal of the registration was made in bad faith. While not addressing specifically
the issue of whether renewal in bad faith satisfies the requirements of the
Policy, the Panel did hold that the complaint was brought in bad faith and constituted
an abuse of the administrative proceeding and mentioned, as one of the factors
leading to the conclusion, the fact that complainant could not establish bad
faith registration and therefore argued bad faith renewal.

The issue of whether renewal of a registration made in bad faith can convert
a name originally registered in good faith to a name registered in bad faith
was addressed head-on in Weatherall Green & Smith v. Everymedia.com,
WIPO Case No. D2000-1528. The Panel in
that case, like the Panel here, found no evidence that the original registration
was obtained in bad faith. The Panel did find that the registration was renewed
in bad faith and that at the time of the renewal the domain name was being used
in bad faith. However, even with this evidence, the Panel did not find a violation
of the UDRP, concluding "a registration of a domain name that at inception
did not breach Rule 4(a)(iii) but is found later to be used in bad faith
does not fall foul of Rule 4(a)(iii)." The Panel also relied on the
Report of the WIPO Internet Domain Name Process (April 30, 1999) which states
that the Report was not intended to extend the definition of abusive
registration "to include domain names originally registered in good faith."
See alsoTeradyne, Inc. v. 4tel Technology, WIPO
Case No. D2000-0026. Clearly, the authors of the Report could have extended
its analysis of the UDRP to cover registrations obtained in bad faith either
at the time of the original registration or at the time of renewal. It
chose not to do so. Similarly, the Policy could have been drafted to address
both bad faith registration and bad faith renewal. It does not, referring only
to a registration having been obtained in bad faith. Thus, there is no support
for Complainantís position.

Not only does the Complainantís position lack the support of the Policy and
the case law, but also it lacks the support of the domain name registrars who
do not seem to treat renewals as new registrations. Indeed, in the WHOIS results
for the domain name <sami.com> annexed as Exhibit 2 to the complaint,
the domain name registrar lists the domain name as being created on October
31, 1995, and expiring on November 1, 2001. There is no indication
that there was a "re-registration". Rather, the renewal is treated
as a ministerial function.

Because Complainant has not presented any evidence to suggest that when the
domain name was originally registered it was done so in bad faith, and because
there is no indication in the UDRP that a renewal constitutes a new registration,
Complainant has not satisfied its burden of showing bad faith registration.
If a domain name was registered in good faith, it cannot, by changed circumstances,
the passage of years, or intervening events, later be deemed to have been registered
in bad faith. Accord, Telaxis Communications Corp. v. William E. Minkle,
WIPO Case No. D2000-0005. Absent proof
of bad faith registration, the Complainant has not satisfied the requirements
of the UDRP. Weatherall Green & Smith v. Everymedia.com, WIPO
Case No. D2000-1528.

7. Decision

The UDRP has a narrow focus which is to combat abusive domain name registration.
The charge given to Panelists is to determine whether there is bad faith use
and registration of a domain name. In this regard, the scope of the UDRP
is narrower than the scope of U.S. law to which both parties are bound. While
the UDRP requires both bad faith use and registration, the Anti-Cybersquatting
Consumer Protection Act, 15 U.S.C. ß 1125, requires bad faith use, registration,
or trafficking. Thus, evidence that might not be sufficient for purposes
of the UDRP may be sufficient to prove a violation of U.S. law. In this case,
it is for the courts to determine whether the conduct of the Respondent violated
federal law.

On the facts presented in this dispute, and given the focus and requirements
of the UDRP, Complainant has not met his burden. While Complainant has shown
rights in the mark SAMI, has shown that the domain name <sami.com> is
identical to the trademark SAMI, and has shown that Respondent has no legitimate
rights or interest in the domain name, Complainant has not shown bad faith registration
of the domain name. Accordingly, for the reasons set forth above, the request
made by the Complainant for transfer of the domain name <sami.com> is
denied.

Barbara A. Solomon, Esq.
Sole Panelist

Dated: August 14, 2001

Footnotes:

1. The Panel is entitled to take notice of
submissions filed after the due date to the extent that they help to illuminate
the issues. Given the basis for the decision, this e-mail is of no relevance.

2. This clearly distinguishes the case from
Barneyís Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059 relied
on by Complainant. That case specifically noted the complainantís high profile
presence in the retail mark and the fame of complainantís mark.